Ex Parte Stratton et al

Patent Trial and Appeal Board

Mar 26, 2013

11520268 (P.T.A.B. Mar. 26, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JOHN G. STRATTON, JESSE ELLIOTT MONEY, ROSHAL
LAWARENCE LEWIS, and DAVID ALLEN WELCH
___________________

Appeal 2010-010652
Application 11/520,268
Technology Center 2400
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Before THU A. DANG, JAMES R. HUGHES, and GREGORY J.
GONSALVES, Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL

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I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-19. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

A. INVENTION
According to Appellants, the invention relates to distributing playable
content as well as to recommending playable content to a user where the
recommendations are generated at a wide area network content server
considering information extracted from one or more playback devices of the
user (Spec. 3, ll. 2-5).

B. ILLUSTRATIVE CLAIM
Claim 1 is exemplary:
1. A method for providing recommendations related to
playable content, comprising:

using a scanning application to scan one or more
memories associated with a processing device to locate all of
the playable content that is stored within the one or more
memories;

uploading to a wide area network server data associated
with all of the playable content located on the one or more
memories scanned by the scanning application; and

using the uploaded data in a recommendation engine
associated with the wide area network server to generate a
playable content recommendation list.

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C. REJECTION
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Juster US 2007/0220552 A1 Sep. 20, 2007
(filed Mar. 15, 2006)
Sodhi US 2006/0218634 Al Sep. 28, 2006

Claims 1-8 and 11-17 stand rejected under 35 U.S.C. § 102(e) as
being anticipated by Juster.
Claims 9, 10, 18, and 191 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Juster and Sodhi.

II. ISSUE
The dispositive issue before us is whether the Examiner has erred in
finding that Juster teaches “using a scanning application to scan one or more
memories … to locate all of the playable content that is stored within the
one or more memories” and “uploading to a wide area network server data
associated with all of the playable content” (claim 1, emphasis added).

III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Juster
1. Juster discloses automatic download of personalized media
content to a portable media device based on user preferences (Abstract).

1 Although the Final Action indicates that claims 9-19 are rejected under 35
U.S.C. § 103(a) (Final Rejection 6), we consider such listing of claims 11-
17, which are rejected under 35 U.S.C. § 102(e), to be in error.
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2. Usage data on the user’s device is transmitted to a music
service over the Internet, wherein usage comprises content on the user’s
device, a number of times the user has played a song, a number of times the
user has skipped a song, and the like (p. 6, ¶ [0044]).
3. Personalized media is received at the media device which
comprises songs that the media service has selected for the user based on the
user’s usage data (p. 6, ¶ [0047]).

IV. ANALYSIS
Claims 1-8 and 11-17
Appellants contend that “Juster discloses that … media content is
downloaded to the user device as a function of ‘usage data’” wherein
“‘usage data’ comprises any and all information related to user activity
with regard to songs, playlists, media files, and the like on the user’s device”
(App. Br. 6). Appellants further contend that “[c]onspicously absent from
[the cited passage of Juster] is how Juster’s music service obtains
information regarding the user’s music collection” (App. Br. 7). Thus,
according to Appellants, Juster does not teach “1) using a scanning
application to scan one or more memories associated with a processing
device to locate all of the playable content …, and then 2) uploading data
associated with all of the playable content” (id.).
However, the Examiner finds that, in Juster, “[a] media service can
evaluate content on a user’s media device as well as user action related
thereto to infer the user’s preferences, and can automatically aggregate and
download content that is relevant to the user’s tastes” (Ans. 4). Thus, the
Examiner finds that “Juster clearly discloses that information on the user’s
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present music collection (all playable content stored within the memory of
the client device) is retrieved” and that “Juster further teaches transmitting
the information to a music service (recommendation engine) that generates
recommendations to the user based on the received information” (Ans. 8).
We give the claim its broadest reasonable interpretation consistent
with the Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
1997). Claim 1 does not define “scanning application” other than that it is
used to scan one or more memories. Thus, we give “scanning application”
its broadest, reasonable definition as any application that is used when
scanning a memory.
Further, claim 1 merely recites that the “scanning application” used to
scan a memory to locate “all of the playable content” stored within the
memory, but does not define as to what the “playable content” is except that
it is a type of data that is being located. However, what type of data that is
being located does not alter the functionality of or provide any additional
function to how the data is located. That is, the limitation is essentially
nonfunctional descriptive material in that the limitation simply describes the
type data to be located, but the underlying functionality remains the same
regardless of the data type. Ex parte Nehls, 88 USPQ2d 1883, 1889 (BPAI
2008) (precedential). See Ex parte Curry, 84 USPQ2d 1272, 1274 (BPAI
2005) (informative) (Fed. Cir. Appeal No. 2006-1003, aff’d, Rule 36 (June
12, 2006)).
Thus, we interpret claim 1 to merely require using an application to
locate data in a memory and uploading to a wide area network server data
associated with the located data. We note that, although Appellants argue
that “[c]onspicuously absent from [the cited passage of Juster] is how
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Juster’s music service obtains information regarding the user’s music
collection” (App. Br. 7), such argument is not commensurate in scope with
the recited language of claim 1. That is, claim 1 does not require obtaining
information regarding the user’s music collection, let alone a “how” the
information is obtained.
Juster discloses transmitting usage data to a music service (FF 2).
Although Appellants contend that “‘usage data’ comprises any and all
information related to user activity with regard to songs, playlists, media
files, and the like on the user’s device” (App. Br. 6), Juster’s usage data also
comprises content on the user’s device (FF 2). In Juster, personalized media
received at a portable device is selected by the media service based on the
user’s usage data (FF 3).
We find no error with the Examiner’s finding that “[Juster’s] media
service can evaluate content on a user’s media device as well as user action
related thereto to infer the user’s preferences, and can automatically
aggregate and download content that is relevant to the user’s tastes” (Ans.
4). That is, we find the media service’s selecting of personalized media
based on the usage comprises scanning the usage data stored in its memory
to make the selection, wherein the usage data comprises content. Thus, we
find Juster’s media service comprises an application that is used to scan its
memory to locate all content that is stored within the memory.
Furthermore, in Juster, the selected personalized media content is
uploaded to a portable media device (FF 1). We find Juster’s personalized
media content selected using the usage data comprises data associated with
located data.
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Accordingly, in view of our claim interpretation, we find no error with
the Examiner’s finding that Juster teaches “using a scanning application to
scan one or more memories … to locate all of the playable content that is
stored within the one or more memories” and “uploading to a wide area
network server data associated with all of the playable content” as recited in
claim 1. Appellants provide no argument for independent claim 11 and
claims 2-8 and 12-17, depending respectively from claims 1and 11, separate
from those of claim 1 (App. Br. 8). Thus, claims 2-8 and 11-17 fall with
claim 1.
Claims 9-19
As for claims 9 and 18, Appellants contend that the cited passages of
Sodhi “disclose providing the user with a[n] opportunity to accept or reject
the license agreement associated with the disclosed software” but does not
“disclose anything relating to a user input for inhibiting execution of the
disclosed software” (App. Br. 9). However, we find no error with the
Examiner’s finding that “Sodhi teaches wherein the user or client is in total
control of the scanning application and wherein the scanning application is
initiated only after the user clicks on the ‘accept’ button” (Ans. 9). That is,
we find no error with the Examiner’s finding that the claim merely requires
that “the user is able to inhibit execution of the scanning application
(equated to the client clicking on the ‘reject’ button)” (id.).
As for claims 10 and 19, Appellants contend that “Sodhi simply does
not permit a user to designate one or more memories to be scanned by a
scanning application” (App. Br. 9). However, we find no error with the
Examiner’s finding that the claim merely requires “accepting user input to
designate one or more memories to be scanned (equated to the client
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clicking on the ‘accept’ button and initiating scan of the clients memory)”
(Ans. 9).
Accordingly, we find no error with the Examiner’s rejection of claims
9, 10, 18, and 19 over Juster in further view of Sodhi.

V. CONCLUSION AND DECISION
The Examiner’s rejection of claims 1-8 and 11-17 under 35 U.S.C.
§ 102(e) and of claims 9, 10, 18, and 19 under 35 U.S.C. § 103(a) is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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